The Complainant is Fenix International Limited c/o Walters Law Group, United States of America (“United States”).
The Respondent is Leon Key, Key International Enterprises LLC, Ethiopia.
The disputed domain name <onlyfansxxx.com> is registered with OpenTLD B.V. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 20, 2021. On March 22, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 22, 2021 the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 22, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on March 22, 2021.
The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 25, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 14, 2021. The Response was filed with the Center on April 14, 2021.
The Center appointed Edoardo Fano as the sole panelist in this matter on May 7, 2021. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The Complainant is Fenix International Limited, a company providing a social media platform that allows users to post and subscribe to audiovisual content on the Internet, including online adult entertainment services, and owning trademark registrations for ONLYFANS, among which the following ones:
- European Trade Mark Registration No. 017902377 for ONLYFANS, registered on January 9, 2019;
- United States Trademark Registration No. 5,769,268 for ONLYFANS, registered on June 4, 2019.
The Complainant operates on the Internet on its website “www.onlyfans.com”, registered on January 29, 2013.
The Complainant provided evidence in support of the above.
According to the WhoIs records, the disputed domain name was registered on February 5, 2021 and when the Complaint was filed the website at the disputed domain name was providing online adult entertainment content.
The Complainant states that the disputed domain name <onlyfansxxx.com> is confusingly similar to its trademark ONLYFANS, as the disputed domain name wholly contains the Complainant’s trademark with the addition of the letters “xxx”, a common reference to the adult entertainment industry.
Moreover, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name since it is not commonly known by the disputed domain name and it is not making either a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.
The Complainant submits that the Respondent has registered the disputed domain name in bad faith, since the website at the disputed domain name offers products and services in direct competition with the Complainant, some of them consisting of content pirated from the Complainant’s users. Therefore, the Respondent targeted the Complainant’s trademark at the time of registration of the disputed domain name and the Complainant contends that the use of the disputed domain name to divert Internet traffic from the Complainant’s website to a website offering adult entertainment content in direct competition to the Complainant qualifies as bad faith registration and use.
The Respondent in the Response states the following:
“The site Onlyfansxxx.com is a auto adult tube site. The content on this site are from onlyfans creators that have published on public platforms and Adult sites as a form of digital marketing. The content on this site was monetarized to attract onlyfans subscribers for onlyfans creators. I all cases the visitor is lead to the creators onlyfans profile as a form of adverting, The content on this site is that of the creators, whom uploaded on public adult sites or in many cases the creators upload there content directly. We in no way shape or form copied any copyright material of onlyfans,com. We are 2 totally different sites. there is no was a visitor could confuse the two, Also most links on this site leads back to the onlyfans creators profile page. Again this is a form of natural organic digital marketing.”
Paragraph 4(a) of the Policy lists three elements, which the Complainant must satisfy in order to succeed:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Panel finds that the Complainant is the owner of the trademark ONLYFANS and that the disputed domain name <onlyfansxxx.com> is confusingly similar to the trademark ONLYFANS.
Regarding the addition of the letters “xxx”, an acronym commonly referred to adult entertainment content, the Panel notes that it is now well established that the addition of descriptive terms or letters to a domain name does not prevent a finding of confusing similarity between the disputed domain name and the trademark (see, e.g., Aventis Pharma SA., Aventis Pharma Deutschland GmbH v. Jonathan Valicenti, WIPO Case No. D2005-0037; Red Bull GmbH v. Chai Larbthanasub, WIPO Case No. D2003-0709; America Online, Inc. v. Dolphin@Heart, WIPO Case No. D2000-0713). The addition of the letters “xxx” does not therefore prevent the disputed domain name from being confusingly similar to the Complainant’s trademark.
It is also well accepted that a gTLD, in this case “.com”, may be ignored when assessing the similarity between a trademark and a domain name (see, e.g., VAT Holding AG v. Vat.com, WIPO Case No. D2000-0607).
The Panel finds that the Complainant has therefore met its burden of proving that the disputed domain name is confusingly similar to the Complainant’s trademark, pursuant to the Policy, paragraph 4(a)(i).
The Complainant in its Complaint, and as set out above, has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. It asserts that the Respondent, who is not currently associated with the Complainant in any way, is not using the disputed domain name for a legitimate noncommercial or fair use or in connection with a bona fide offering of goods or services.
The prima facie case presented by the Complainant is enough to shift the burden of production to the Respondent to demonstrate that it has rights or legitimate interests in the disputed domain name. However, the Respondent in the Response is stating that the website at the disputed domain name is “a form of digital marketing” apparently arguing in effect that it is some sort of affiliate of the Complainant, but without presenting any evidence of any rights or legitimate interests it may have in the disputed domain name, and the Panel is unable to establish any such rights or legitimate interests on the basis of the evidence in front of it.
Moreover, the Panel finds that the composition of the disputed domain name carries a risk of implied affiliation. See WIPO Overview 3.0, section 2.5.1.
The Panel therefore finds that paragraph 4(a)(ii) of the Policy has been satisfied.
Paragraph 4(b) of the Policy provides that “[…] for the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that [the Respondent has] registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or
(ii) that [the Respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the Respondent has] engaged in a pattern of such conduct; or
(iii) that [the Respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the Respondent’s] website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the Respondent’s] website or location or of a product or service on [the Respondent’s] website or location”.
Regarding the registration in bad faith of the disputed domain name, the Panel finds that given the composition of the disputed domain name, the Respondent must have known of the Complainant’s registered trademark ONLYFANS and deliberately registered the disputed domain name, <onlyfansxxx.com>, especially because the website at the disputed domain name is offering the same products and services as the Complainant, namely online adult entertainment content, in some case taken from the Complainant’s website.
The above suggests to the Panel that the Respondent intentionally registered and is using the disputed domain name in order to create confusion with the Complainant’s trademark and attract, for commercial gain, Internet users to its website in accordance with paragraph 4(b)(iv) of the Policy.
The Panel finds that the Complainant has presented evidence to satisfy its burden of proof with respect to the issue of whether the Respondent has registered and is using the disputed domain name in bad faith.
The Panel therefore finds that paragraph 4(a)(iii) of the Policy has been satisfied.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <onlyfansxxx.com> be transferred to the Complainant.
Edoardo Fano
Sole Panelist
Date: May 18, 2021